When is the descriptive use of a mark not in accordance with honest practices?
The liquor is distributed worldwide. In the last 20 years in Germany, it has been sold under the trademark ‘Amarula’. There are registered trademarks for Amarula, covering both the word and different word/picture combinations.
In 2008, another company started to sell a liquor called Marulablu. The bottles in which this liquor is sold show different claims such as ‘Marula taste’ or ‘Marula fruit distillate’. The manufacturer of the original Amarula liquor challenged the fact that the Marulablu liquor was in fact made of the marula fruits.
The manufacturer of the Amarula liquor saw Marulablu as an infringement of several of its own trademarks, and furthermore asserted that the Marulablu bottle design could be attacked under unfair competition rules of passing off.
The Düsseldorf District Court had issued a judgment with which it had granted a restraining order and claims for damages, account of profits and deletion of a ‘Marulablu’ trademark. The Düsseldorf Court of Appeal, however, reversed the judgment because it held that the use of ‘Marulablu’ was descriptive within the meaning of a provision in the German Trademarks Act corresponding to Article 6(1) lit. b of the EU Trademarks Directive.
According to the Düsseldorf Court of Appeal, ‘marula’ indicated the use of the well-known fruit of the same tree and was therefore descriptive irrespective of the element ‘-blu’ that was attached to the name of the fruit.
“ARTICLE 6(1) LIT. B DID NOT ONLY CONCERN PURELY DESCRIPTIVE USES BUT ALSO FORMS OF USE WHERE THE DESCRIPTIVE SIGN IS USED AS PART OF A COMBINATION.”
The Federal Supreme Court, in a decision that was handed down in March 2013, did not challenge the appeal court’s reasoning with regard to the “descriptive use” of the name of the marula fruit. It also held that the use of ‘Marulablu’ was descriptive irrespective of the ‘-blu’ element because Article 6(1) lit. b did not only concern purely descriptive uses but also forms of use where the descriptive sign is used as part of a combination (irrespective of whether this combination is in one, two or more words).
However, the Federal Supreme Court held that it was possible that the defendant could not invoke the defence of descriptive use since the plaintiff had presented facts that could mean that the use was not in accordance with honest practices in industrial or commercial matters (Article 6[1] lit. b of the EU Trademarks Directive).
The plaintiff had pointed to the opinion of private examiners who said that the attacked liquor did not contain marula fruits. This could mean, if established, that the reference to marula within the ‘Marulablu’ trademark was in itself misleading. Such a misleading reference would mean that the use of the trademark ‘Marulablu’ for a liquor that did not contain the original fruit of that name could be against honest practices in commercial matters.
So the Federal Supreme Court remitted the case back to the Düsseldorf Court of Appeal in order to re-examine the factual presentations of both parties with regard to this “misleading reference” point of law.
The Federal Supreme Court also held that should the appeal court come to the conclusion that in this case the “descriptive use” defence would not work because of the “dishonest use” exception, the court could not argue—on the basis of the set of facts established so far—that there was no likelihood of confusion between ‘Amarula’ and ‘Marulablu’. The court would also have to re-examine the facts with regard to likelihood of confusion.
This case is important because it shapes the scope of the “dishonest use” exception to the descriptive use defence. It establishes that considerations normally associated with unfair competition law (such as “misleading statements”) can play a role also in trademark cases where categories such as “honest practice in commercial matters” come into play.
